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July 2014: Patent and Antitrust Victory Against 3M

July 2014

Quinn Emanuel recently obtained a significant antitrust and patent victory for TransWeb, LLC against 3M following a jury trial in New Jersey. The unanimous jury found that 3M illegally attempted to monopolize the markets for safety-related respirator products by suing for infringement of patents it knew were procured by fraud on the Patent Office. The jury also found 3M’s asserted patents were invalid, not infringed and, in an advisory capacity, unenforceable due to inequitable conduct before the Patent Office. The Court subsequently awarded TransWeb more than $26 million in damages and attorneys’ fees and concluded that 3M committed inequitable conduct before the Patent Office, which rendered its patents unenforceable.

TransWeb is a specialty manufacturer of filtration materials used in respirators and other filtration products. In 1996, TransWeb developed a process of plasma-fluorinating its filtration material and then charging it to make the material oil-resistant and meet new government respirator standards. This process helped the filter material stay light and breathable for longer, particularly in oily environments.

At this time, 3M had a different patented process for making oil-resistant filtration material, which used a chemical known as PFOS. However, due to environmental concerns, 3M was forced to abandon this process. In early 1997, 3M learned that TransWeb would be attending a filtration Expo in its hometown of Minneapolis and displaying its new T-Melt oil-resistant filtration material. 3M managers instructed certain employees to visit TransWeb’s booth and obtain information and samples. Following the Expo, 3M also met with TransWeb to learn more about its products.

Around the same time, 3M inventors, including individuals who attended the Minneapolis Expo, began to rush the filing of a patent application for a manufacturing process nearly identical to TransWeb’s. 3M analyzed samples of TransWeb’s materials and respirators incorporating TransWeb’s materials and realized they were made using the same process 3M sought to patent. Nevertheless, 3M proceeded with its patent application. Only after the Patent Office issued 3M a notice of allowability for the patent did 3M disclose the existence of TransWeb’s materials. However, 3M fraudulently claimed TransWeb’s products were confidential before 3M filed its patent application and therefore could not be prior art. 3M failed to disclose that TransWeb’s products were publicly available more than a year before 3M filed its patent application. Based on 3M’s misrepresentations, the Patent Office allowed 3M’s patent to issue.

TransWeb is the only other manufacturer of plasma-fluorinated oil-resistant material in the world and supplies it to 3M’s respirator competitors. 3M does not sell its plasma-fluorinated material to others, instead only using it internally. After twice unsuccessfully attempting to acquire TransWeb, 3M filed suit in Minnesota for patent infringement in May 2010, claiming TransWeb was infringing 3M’s patented process. TransWeb obtained dismissal of the Minnesota action for lack of personal jurisdiction and filed a declaratory judgment action in its home state of New Jersey, where the case was tried to a jury.

Quinn Emanuel succeeded in obtaining a very rare jury verdict on a Walker Process antitrust claim and meeting the high standard for proving inequitable conduct before the Patent Office. As a result of this victory, partners Hal Barza and Michael Williams were recently named Litigators of the Week by the American Lawyer.